Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BROADWAY CHICKEN, INC.
Serial No. 74/326,626
March 26, 1996
Before Rice, Hanak, and Hohein
Administrative Trademark Judges
Opinion by Rice
Administrative Trademark Judge
An intent-to-use application has been filed by Broadway Chicken, Inc. to register the mark BROADWAY CHICKEN (with CHICKEN disclaimed) for restaurant services. [FN1]
Registration has been finally refused under Section 2(d) of the Act, 15 U.S.C. 1052(d), on the ground that applicant's mark so resembles the registered marks BROADWAY PIZZA (with PIZZA disclaimed) for restaurant services [FN2] and BROADWAY BAR & PIZZA (with BAR & PIZZA disclaimed) for restaurant and bar services [FN3] as to be likely, when and if applicant's mark is used in connection with its specified services, to cause confusion, or to cause mistake, or to deceive. [FN4]
In support of the refusal to register, the Examining Attorney has made of record copies of 9 third-party registrations, and printouts of excerpts from 32 stories in Mead Data Central's NEXIS computerized data base, offered to show that "the same restaurants sell both pizza and chicken under the same mark." [FN5]
Applicant, in turn, has submitted two Thomson & Thomson search reports. The first search report contains the results of a search, conducted in October of 1992, of federal application and registration records, and of approximately 9 million company names in a Dun & Bradstreet database of company/business names. The federal records disclosed in the first search report include; inter alia, a number of third-party registrations of marks containing the term BROADWAY for restaurant services, namely, registrations of the marks BROADWAY'S JERUSALEM 2 PIZZA FALAFEL and design, BROADWAY SUNSET, CREPES ON BROADWAY, ELLIOTT'S OFF BROADWAY DELI & RESTAURANT and design, and BROADWAY MUSEUM CAFE, as well as a registration of THE WAY OFF BROADWAY DELI for delicatessen services. [FN6] The search of company names in the Dun & Bradstreet database found more than 500 entities providing restaurant, bar, or related services under a trade name containing the term BROADWAY. Examples of the many such entities identified as providing services in the nature of restaurant, or "eating place," services, include BROADWAY CAFE, [FN7] BROADWAY CARRYOUT, BROADWAY CHINA RESTAURANT, BROADWAY CHINESE & AMERICAN RESTAURANT, BROADWAY CLUB, T-BONES BROADWAY COFFEE SHOP, AL'S BROADWAY, BROADWAY, BROADWAY ARTIC CIRCLE, BROADWAY BAR & RESTAURANT, BROADWAY BEVERAGE & DELI, BROADWAY BEEF INC, BROADWAY BILLIARDS, BROADWAY BOBBY'S PIZZERIA, BROADWAY BREAKFAST, BROADWAY BURGER HOUSE, BROADWAY DAIRY QUEEN, BROADWAY DELI, BROADWAY DINER, BROADWAY DINNER TRAIN, BROADWAY EAST MANDARIN CUISINE, BROADWAY EATS LTD, BROADWAY EXPRESS, BROADWAY FAMILY RESTAURANT, BROADWAY FARMS RESTAURANT, BROADWAY GRILL, BROADWAY INN, BROADWAY ITALIAN PIZZERIA, BROADWAY LOUNGE, BROADWAY LUNCHEONETTE, BROADWAY MARKET RESTAURANT, BROADWAY OMLETS, BROADWAY ORANGE JULIUS, BROADWAY PASTRY AND COFFEE SHOP, BROADWAY PIZZA HOUSE, BROADWAY PIZZA PALACE, BROADWAY PIZZA FAMILY RESTAURANT, BROADWAY PIZZERIA, BROADWAY QUICK LUNCH, BROADWAY RESTAURANT, BROADWAY ROUND TABLE, BROADWAY SANDWICH SHOP, BROADWAY SEAFOOD RESTAURANT, BROADWAY SUBS, AND BROADWAY TAVERN.
*2 The second search report [FN8] contains the results of a search, conducted in October 1993, of 138 current telephone white/yellow pages directories from cities located throughout the United States, and of a search, conducted at the same time, of the American Business Directory, a publicly available electronic file (maintained by Dialog Information Services, Inc.) of information from U.S. telephone directory business listings. [FN9] The telephone directory listing evidence [FN10] includes a number of listings (some with ads) in the yellow pages under the heading "Restaurants," namely, BROADWAY RESTAURANT (in Rockford, Illinois), BROADWAY BAGELS CAFE (with an ad referring to sandwiches, bagels, soups, salads, etc., in Mobile, Alabama), BROADWAY FAMILY RESTAURANT INC. (with an ad describing its restaurant services, in Lincoln, Maine), BROADWAY DINER & ICE CREAM PARLOR (also in Lincoln), BROADWAY COFFEE SHOP & DAIRY (in Bangor, Maine), BROADWAY RESTAURANT & COCKTAIL LOUNGE (in Aurora, Illinois), BROADWAY FIFTY-FIFTY (in San Antonio, Texas), BROADWAY BAR & GRILL and BROADWAY DELI (located at 1460 and 1457, respectively, 3rd St. in Santa Monica, California), BROADWAY (in Worcester, Massachusetts, which also has a white pages listing for BROADWAY BUFFET), BROADWAY CAFE & JUMBO STEAK HOAGIE (in Ann Arbor, Michigan, where there is also a white pages listing for BROADWAY DELI NEW YORK TIMES), BROADWAY CAFE (in Wichita, Kansas), and BROADWAY RESTAURANT (in Marion, South Dakota). As for the white, or white/yellow, pages listings of trade names containing the term BROADWAY for restaurant services and closely related goods and services, there are of record a large number of them, at least approximately 80 of which, from their names, are clearly eating places, and some of which may or may not be. Moreover, some cities have more than one such listing. They include Cleveland, Ohio, which has listings for BROADWAY DINER and BROADWAY PIZZA & SPAGHETTI & SANDWICH; Allentown, Pennsylvania, with BROADWAY PIZZA and BROADWAY TAVERN; Los Angeles, California, with BROADWAY PIZZA & CHICKEN, BROADWAY PLAZA PASTA BAR & GRILL, and BROADWAY SNACK BAR; Kansas City, Missouri/Kansas, with BROADWAY CAFE and BROADWAY SNACK SHOP; Queens, New York, with BROADWAY DELICATESSEN, BROADWAY SANDWICH SHOP, and BROADWAY TAVERN; Albany, New York, with BROADWAY DELI WORKS and BROADWAY LUNCHEONETTE; Passaic, New Jersey, with BROADWAY BURGER INC., BROADWAY PIZZERIA & RESTAURANT, BROADWAY RESTAURANT & LOUNGE, and BROADWAY TERMINAL COFFEE SHOP; Brooklyn, New York, with BROADWAY DINER and BROADWAY PIZZA; Salt Lake City, Utah, with BROADWAY DELI & BANDALOOPS COFFEE BAR, BROADWAY PIZZA, and BROADWAY RESTAURANT; Manhattan, New York, with, inter alia, BROADWAY CAFE, BROADWAY CHINA RESTAURANT, BROADWAY DINER, BROADWAY FRIED CHICKEN, BROADWAY GOURMET, BROADWAY GRILL, BROADWAY JOE STEAK HOUSE, BROADWAY PASTA, BROADWAY PIZZA, BROADWAY PIZZA & RESTAURANT, BROADWAY RESTAURANT, and BROADWAY'S JERUSALEM ??? (illegible text) PIZZA; Bronx, New York, with BROADWAY DELICATESSEN and BROADWAY PIZZA; Erie County, New York, and vicinity, with BROADWAY BOBBY'S PIZZERIA, BROADWAY MARKET RESTAURANT, BROADWAY PIZZA & SUBS, and BROADWAY STATION ice cream; Bayonne, New Jersey, with BROADWAY DELICATESSEN and BROADWAY DINER; Atlanta, Georgia, with BROADWAY DANNY'S PIZZA and BROADWAY DELI; Camden County, New Jersey, with BROADWAY EDDIE'S FOOD COURT and BROADWAY NEWS & PIZZA; Philadelphia, Pennsylvania, with BROADWAY DELI RESTAURANT, BROADWAY PIZZA II, BROADWAY PUB, BROADWAY RESTAURANT, and BROADWAY STEAK & HOGIE; Nassau County, New York, with BROADWAY DELI & GROCERIES, BROADWAY DELICATESSEN, BROADWAY LUNCHEONETTE, BROADWAY PIZZA, BROADWAY PIZZERIA, BROADWAY SEAFOOD, and BROADWAY TAVERN; and San Diego, California, with BROADWAY BURGERS, BROADWAY CAFE, BROADWAY DELI & GROCERY, and BROADWAY PIZZA. Many of these establishments have a listed address on a street, road, avenue, etc., named "Broadway." Moreover, there are many white, or white/yellow, pages listings of trade names containing the term BROADWAY for goods or sevices unrelated to the food and restaurant field.
*3 The search of company names in the American Business Directory found more than 575 entities whose names contain the term BROADWAY and which offer restaurant services and/or related services or goods. [FN11] Of these, we count well over 300 entities which are designated in the American Business Directory search report as restaurants and/or eating places (for the vast majority of them, the restaurant/eating place designation is their primary designation; for a few, it is their secondary designation). For purposes of example, the names (and the locations, for names which are identical to each other) of the first 100 entities which are designated as primarily restaurants and/or eating places are listed in a footnote below. [FN12]
Applicant contends that the evidence which it has made of record overwhelmingly establishes that "in the real world marketplace, BROADWAY CHICKEN is not confusingly similar to BROADWAY BAR & PIZZA and/or BROADWAY PIZZA." Specifically, applicant contends that its evidence shows extensive third-party use of BROADWAY in trade names/service marks for restaurant services; that because of the resulting weakness of the term BROADWAY, the public is more likely to rely upon the noncommon portions of the marks here, i.e., CHICKEN vs. BAR & PIZZA and/or PIZZA, to distinguish among similar services; and that when properly viewed as wholes, applicant's mark BROADWAY PIZZA and registrant's marks BROADWAY PIZZA and BROADWAY BAR & PIZZA are substantially different in sight, sound, and meaning.
In support of its position, applicant relies heavily upon Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed.Cir.1993). That case involved cross motions for summary judgment, in a cancellation proceeding before the Board, on the issue of likelihood of confusion. Defendant's evidence in support of its motion for summary judgment included, inter alia, an affidavit with attached exhibits, including a trademark search report and copies of yellow page and white page listings showing use of the mark in question. The Board granted plaintiff's motion for summary judgment and denied defendant's motion. Defendant filed an appeal to the Court of Appeals for the Federal Circuit, which vacated the decision of the Board and remanded. In its opinion in the case, the Court paid particular attention to the Board's treatment of the defendant's trademark search report and telephone directory listing evidence. The pertinent portion of the Court's opinion, at page 2029, reads as follows (emphasis added):
In concluding that a likelihood of confusion existed as a matter of law, the board erred in its treatment of the evidence of record. One of the relevant factors in the likelihood of confusion examination is the "number and nature of similar marks in use on similar goods [or services]." [citation omitted] As for Lloyd's Foods' proffered evidence of third-party use, the board stated that "[w]hile [it] has considered this evidence, the evidence is entitled to little weight. It is well settled that search reports and telephone directories listing marks and entities containing the term are incompetent by themselves to prove that those marks and trade names are in use or that the public is exposed to them. [citations omitted]" From this, it is apparent to us that notwithstanding what it said it was doing, for all intents and purposes the board ignored this evidence. It thus rejected Lloyd's Foods' contention that the mark was "weak" and entitled to a narrow range of protection.
*4 The marks at issue in the cases relied upon by the board were used in conjunction with the sale of goods, not with the provision of services. A service mark is different from a mark for goods, especially in the manner it is used in commerce. The legally significant use giving rise to rights in a mark for goods is derived from the placing of the mark in some manner on the goods either directly or on their containers or packaging. [citation omitted] A service mark, on the other hand, entails use in conjunction with the offering and providing of a service. This makes all the more important the use of the mark in "sales" or "advertising" materials of different descriptions. [citations omitted] Such use in advertising includes listing the name of the business, including the mark, in telephone directories and placing listings and advertisements in the yellow pages. Lloyd's Foods' threshold showing that the mark appears in advertising, in the form of current listings in the yellow and white pages, carries the presumption that the service mark is being used by third-parties in connection with the offering of the advertised services. It therefore was impermissible to disregard the directory listings. Eli's came forward with no evidence that the businesses listed are not, in fact, using the mark, or that their use has no effect on the consuming public, and consequently on the strength of Eli's registration. We come to no conclusion here about what weight should be given such evidence of third-party use in establishing the strength of the mark and the effect of this factor on the analysis of a likelihood of confusion. But the evidence presented was at least sufficient to raise a potentially dispositive issue of fact about the extent and character of the third-party use of the mark "Lloyd's," and to preclude summary judgment on the likelihood of confusion.
The Examining Attorney in the present case takes the position that third-party registrations are entitled to little weight on the issue of likelihood of confusion, because they are not evidence of what happens in the marketplace, or that the public is familiar with the registered marks; that evidence from trade name directories is also incompetent on the issue of likelihood of confusion, particularly in ex parte proceedings where there is no opportunity to discover what marks are actually in use; that the Court in Lloyd's made no conclusion as to the weight which should be given to evidence such as applicant's in the likelihood of confusion analysis, but rather found only that the evidence of third-party use offered therein was sufficient to raise a genuine issue of material fact and hence to preclude summary judgment; that although the term BROADWAY is somewhat weak, it is still the dominant feature of the marks at issue, and should be given greater weight in the likelihood of confusion determination than the descriptive, disclaimed, terms CHICKEN, PIZZA, and BAR & PIZZA; and that the commercial impression of all three marks is that "of an upscale or avant-garde style restaurant service in that Broadway is the principal theater district of New York City."
*5 It is true that the Court, in Lloyd's, came to no conclusion about what weight should be given to the defendant's evidence of third-party use in determining the strength of plaintiff's mark and the effect of this factor on the likelihood of confusion analysis. However, the Court did say that the Board erred in ignoring that evidence. And, most significantly, the Court held that defendant's "threshold showing that the mark appears in advertising, in the form of current listings in the yellow and white pages, carries the presumption that the service mark is being used by third-parties [sic] in connection with the offering of the advertised services" (emphasis added).
In the present case, as in Lloyd's, the involved marks are service marks. [FN13] Further, in the present case, as in Lloyd's, applicant has submitted photocopies of listings in the yellow and white pages of current telephone directories. Indeed, the third-party use evidence in this case is stronger than that offered in Lloyd's, because here we have not only the telephone directory listings themselves, [FN14] but also evidence from a search of the American Business Directory (a compilation of U.S. telephone directory listings supplemented by primary research in the form of telephone interviews to capture further data and update the directory information), as well as evidence from a search of a Dun & Bradstreet database of 9 million company/business names. Although there is, of course, a hearsay element to this evidence, there is no bias in the databases, which were not prepared for purposes of this case, but rather are maintained on an ongoing basis for general business use. Cf., Rule 803(17) of the Federal Rules of Evidence (which provides that market quotations, tabulations, lists, directories, or other published compilations, generally used and relied upon by the public or by persons in particular occupations, are not excluded by the hearsay rule); Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835 (TTAB 1989); and Sheller-Globe Co. v. Scott Paper Co., 204 USPQ 329 (TTAB 1979). Moreover, these multiple sources of third-party use evidence all corroborate each other. Finally, we note that we take a somewhat more permissive stance with respect to the introduction and evaluation of evidence in an ex parte proceeding than we do in an inter partes proceeding. See TBMP § 1208. [FN15]
Of course, the Lloyd's decision arose in the context of a summary judgment motion filed in a cancellation proceeding, and the standards for the introduction and evaluation of evidence are much more liberal for summary judgment than for trial. However, our approach to the introduction and evaluation of evidence in ex parte cases is more akin to that for summary judgment than to that for trial.
For the foregoing reasons, we conclude that the evidence offered by applicant is sufficient to establish prima facie that a significant number of third parties are using trade names/service marks containing the term BROADWAY for restaurant/"eating place" services, as well as for goods and services related thereto. [FN16]
*6 We turn now to the issue of likelihood of confusion presented in this case. Because the identification of services in applicant's application (i.e., "restaurant services") is identical to that in registrant's registration for the mark BROADWAY PIZZA, and is in part identical and otherwise closely related to that in registrant's registration for the mark BROADWAY BAR & PIZZA ("restaurant and bar services"), no distinction can be drawn between the services of the parties for purposes herein. Indeed, applicant does not argue otherwise. Thus, the only issue remaining to be determined is whether the contemporaneous use of applicant's mark BROADWAY CHICKEN and registrant's marks BROADWAY PIZZA and BROADWAY BAR & PIZZA in connection with restaurant services is likely to cause confusion.
Evidence of widespread third-party use, in a particular field, of marks containing a certain shared term is competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the field. See In re Bed & Breadfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed.Cir.1986); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986); Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863 (TTAB 1985); and EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ 597 (TTAB 1982), aff'd, 706 F.2d 1213, 217 USPQ 986 (Fed.Cir.1983).
In the present case, applicant's mark, BROADWAY CHICKEN, and registrant's marks, BROADWAY PIZZA and BROADWAY BAR & PIZZA, all consist of the same initial term, BROADWAY, plus descriptive or generic matter. Ordinarily, these similarities, combined with the identity in the services, would point to a finding of likelihood of confusion. However, the marks, considered in their entireties, are readily distinguishable from one another due to the differences in their remaining elements. Further, at least half, if not more, of the third-party telephone directory listings of enterprises whose trade names/marks contain the term BROADWAY have listed addresses on a street, road, avenue, etc., named "Broadway." To purchasers familiar with these enterprises, the term BROADWAY will have a geographic significance. [FN17] We also note that the term BROADWAY is defined in The Random House Dictionary of the English Language (Second Edition Unabridged 1987) as, inter alia, "a street in New York City, famous for its theaters, restaurants, and bright lights."
This is a very close case. However, viewed together with the differences in the marks, and the geographic significance of the term BROADWAY, applicant's evidence of widespread third-party use of trade names/marks containing the term BROADWAY for restaurant/"eating place" services and closely related goods and services, as well as for unrelated goods and services, is sufficient, for purposes of this ex parte proceeding, [FN18] to persuade us that confusion is not likely to result from the contemporaneous use of applicant's mark BROADWAY CHICKEN and registrant's marks BROADWAY PIZZA and BROADWAY BAR & PIZZA in connection with restaurant services.
*7 Decision: The refusal to register is reversed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/326,626, filed October 28, 1992 under the provisions of Section 1(b) of the Trademark Act of 1946, 15 U.S.C. 1051(b), based upon applicant's assertion of a bona fide intention to use the mark in commerce.
FN2. Registration No. 1,247,363, issued August 2, 1983; Sec. 8 affidavit accepted; Sec. 15 affidavit received. Both of the cited registrations issued to, and are owned by, Eddie Peck, Inc.
FN3. Registration No. 1,247,364, issued August 2, 1983; Sec. 8 affidavit accepted; Sec. 15 affidavit received.
FN4. Initially, the Trademark Examining Attorney cited a third registration as a reference against applicant's mark, namely, Registration No. 1,246,646, issued to Eddie Peck, Inc. on July 26, 1983 for the mark BROADWAY STATION for restaurant and bar services. However, the Examining Attorney, after considering certain third-party registration evidence submitted by applicant in response to the refusal of registration, withdrew this registration as a reference against applicant's mark.
FN5. Two of the third-party registrations, both for restaurant services, are for marks which include both the term CHICKEN and the term PIZZA (for example, LIL CHET'S FRESH DOUGH PIZZA & CHICKEN and design). The other seven, six of which are owned by the same registrant, are for prepared food items, including both chicken or chicken dishes and pizza, for consumption off, or on or off, the premises, or for services such as "delivery of prepared meals, namely, hot pizza pies, chicken dinners and hot sandwiches, all made to order for consumption off the premises."
With respect to the NEXIS excerpts, the evidence shows that the Examining Attorney's search request was for stories which contained the word RESTAURANT, and the words PIZZA and CHICKEN within five words of each other. The search found 1329 such stories. The Examining Attorney made of record excerpts from a representative sampling of these stories, namely, stories 1-10, 20, 30, 40, 50, 60, 70, 80, 90, 100, 200, 300, 400, 500, 600, 700, 800, 900, 1000, 1100, 1200, 1300, and 1329. Although some of the 32 story excerpts are not relevant to the issue here (for example, some of them simply happen to have a number of restaurant names listed together, such as "[A]mong the chains represented within the FFCA portfolio are Arby's, Applebee's, Burger King, Denny's, Hardee's, Jack in the Box, Kentucky Fried Chicken, Pizza Hut, ..."), there are 15 different story excerpts referring to specific restaurant menus which include both pizza and chicken (for example, story 4, from the October 30, 1994 issue of The New York Times, reads in part, "Pasta Cafe ... offers ... pastas, individual pizzas, grilled fish, chicken, veal, and vegetable entrees ..."; story 20, from the October 21, 1994 issue of The Record, reads in part, "Hannah's serves traditional American cuisine including charcoal-broiled burgers, steak, chicken, fresh fruit, and thin-crust pizza."; and story 80, from the September 18, 1994 issue of the Pittsburgh Post-Gazette, reads in part, "[A]t McDade's Garden Cafe ... diners may order pizza, sandwiches, Italian dishes, chicken, steak, or seafood ...").
FN6. A trademark search report is not credible evidence of the existence of the registrations listed in the report. In order to make third-party registrations properly of record in a proceeding such as this, applicant should submit copies of the registrations themselves, or the electronic equivalent thereof, namely, printouts from the electronic records of the Patent and Trademark Office's Trademark Automated Search System, currently known as "X-Search." See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). However, because the Examining Attorney has not objected to applicant's third-party registration evidence, but rather has treated the registrations as though they were properly of record, we will do the same.
FN7. Many entities named BROADWAY CAFE, or whose names contain those words (i.e., BROADWAY CAFE GOLDEN FOUNTAIN, BROADWAY CENTRAL CAFE, DOCS BROADWAY CAFE & LOUNGE, MARKS BROADWAY CAFE, ONE BROADWAY CAFE, 32ND AND BROADWAY CAFE, etc.), were found. The same is true of entities whose names consist of, or include, the words BROADWAY DELI, BROADWAY DINER, BROADWAY GRILL, BROADWAY INN, BROADWAY LOUNGE, BROADWAY PIZZA, BROADWAY RESTAURANT, and BROADWAY TAVERN.
FN8. The October 1993 search report materials submitted by applicant are accompanied by the affidavit of an employee of Thomson & Thomson. The affidavit describes Thomson & Thomson, the services which it performs, the nature of the search performed for applicant, and the materials searched.
FN9. The database contains information from the telephone directory listings themselves, plus additional information obtained through telephone interviews.
FN10. Applicant has submitted photocopies of the telephone directory pages bearing the listings found in the search.
FN12. The first 100 listed restaurants/eating places whose names contain the term BROADWAY are OFF BROADWAY (Jackson, WY), BROADWAY CAFE (Wamsutter, WY), ON BROADWAY (Milwaukee, WI), BROADWAY BABY, DAVID'S OFF BROADWAY, SONNY'S ON BROADWAY, SIAM ON BROADWAY, B BAC'S ON BROADWAY, CHARLIE'S ON BROADWAY, PETOSA'S ON BROADWAY, MOISHE'S OFF BROADWAY, CLUB BROADWAY ENTERTAINMENT, THAI ON BROADWAY, BILL'S OFF BROADWAY, BROADWAY NEW AMERICAN GRILL, MANDARIN ON BROADWAY, BROADWAY ESPRESSO, BROADWAY QUICK LUNCH, RESTON BROADWAY DELI, BROADWAY CAFETERIA, BROADWAY PIZZA (Kearns, UT), BROADWAY PIZZA (Salt Lake City, UT--2 different locations), BROADWAY DELI & BANDALOOPS, ON BROADWAY RISTORANTE, BROADWAY DELI (Houston, TX), BROADWAY FIFTY-FIFTY, BROADWAY CAFE (Center, TX), BROADWAY GRILL (Dallas, TX), BROADWAY'S INCREDIBLE EDIBLES, WONG'S BROADWAY CHINESE & AMER, LA FONDA ON BROADWAY, BROADWAY SOUTH, BROADWAY PIZZA HOUSE, BROADWAY DINNER TRAIN, BROADWAY CAFE (Crossville, TN), BROADWAY FARMS RESTAURANT, BROADWAY CAFE (Yankton, SD), OMELETS ON BROADWAY, BROADWAY PIZZA (Pawtucket, RI), BROADWAY DELICATESSEN & BKRY, LEON'S & CATERING ON BROADWAY, BROADWAY LUNCH, BROADWAY STEAK & HOAGIE, BROADWAY FAMILY RSTRNT (Bangor, PA), BROADWAY DELI MINI MARKET, NEW BROADWAY FOUR, BROADWAY DELI RESTAURANT INC, BROADWAY PIZZA RESTAURANT, BROADWAY CAFE (Clifton Heights, PA), BROADWAY DINER (Wind Gap, PA), BROADWAY PIZZA and BROADWAY PIZZA II (both in Philadelphia, PA), BROADWAY TAVERN, BROADWAY HOTEL, BROADWAY MERCANTILE, DELI ON BROADWAY & ESPRESSO, BROADWAY SALOON, BROADWAY REVUE, BRADY'S ON BROADWAY, PIZZA ON BROADWAY, BROADWAY GRILL (Altus, OK), FANNIES ON BROADWAY, BROADWAY DINER (Cleveland, OH), BROADWAY PIZZA SPAGHETTI, BROADWAY BREAKFAST, CREPES ON BROADWAY, OLD BROADWAY RESTAURANT, BROADWAY PIZZA (Tivoli, NY), OFF BROADWAY RESTAURANT, BROADWAY SAM'S PIZZA, BROADWAY PIZZERIA, SOUTH BROADWAY LUNCHEONETTE, BROADWAY SEAFOOD RESTAURANT, BROADWAY PIZZA (Long Island City, NY), BROADWAY NOODLE INC, BROADWAY FAMILY DINER, BROADWAY PIZZA (Hicksville, NY), BROADWAY PLAZA DELICATESSEN, TWENTY THREE BROADWAY RSTRNT, BROADWAY DELI INC, OLD BROADWAY INN, BROADWAY COTTAGE II, BROADWAY GOURMET, BROADWAY DINER (New York, NY--3 different locations), BONNIE-FIVE BROADWAY CORP, BROADWAY GROCERY, BROADWAY BAGELS, BROADWAY CHINA RESTAURANT, BROADWAY FANCY FOODS INC, BROADWAY BOBBY'S PIZZERIA, BROADWAY ZONA ROSA, LUNCH ON BROADWAY INC, 1420 BROADWAY DELI INC, BROADWAY DELI (New York, NY), 341 W BROADWAY RESTAURANT INC, BROADWAYS BEST GOURMET FARM, and BONNIE-THREE BROADWAY CORP.
The remaining 200+ listed restaurants/eating places include other names/marks which are of particular interest because they are similar in construction to applicant's mark BROADWAY CHICKEN and registrant's mark BROADWAY PIZZA. They include BROADWAY PASTA, BROADWAY SHRIMP, BROADWAY BAR-B-Q, BROADWAY SUBMARINE, BROADWAY THAI, BROADWAY BURGERS, and BROADWAY SUBS. Also of interest are BROADWAY FRIED CHICKEN, BROADWAY SOUL FOOD, BROADWAY PIZZA & CHICKEN, BROADWAY PIZZA & SUBS, and BROADWAY DELI BURGER.
FN13. Moreover, the involved services are restaurant services, and many of the third-party company names/marks in applicant's evidentiary record include a term, such as restaurant, deli, diner, cafe, coffee shop, etc., which indicates that the named entity is offering restaurant or "eating place" services. Thus, this case differs from cases in which evidence of asserted third-party use is offered, but the goods or services of the asserted third-party users are not revealed, or have nothing in common with the goods or services at issue.
FN14. These photocopies of the pertinent telephone directory pages are the best evidence of the existence of such listings.
FN15. The Trademark Trial and Appeal Board Manual of Procedure (TBMP) (Stock No. 903-022-00000-1) is available for a fee from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402. (Telephone (202) 512-1800).
FN16. We realize, of course, that the record does not reveal the extent of the use made by the listed third-party businesses; that some of the businesses may never have gotten off the ground, or may have gone out of business; that some of the businesses may be small enterprises, in remote locations, that have affected only a miniscule portion of the general purchasing public for restaurant/eating place services; and that many or all of the listings for BROADWAY PIZZA, BROADWAY STATION, and BROADWAY BAR & PIZZA may be registrant's. Nevertheless, the magnitude of applicant's evidentiary record is such that even allowing for these possibilities, there is still a significant body of evidence of third-party use.
We do not mean to imply that listings in the white pages of telephone directories constitute technical service mark use. However, as noted by the Court in Lloyd's, advertisements in the yellow pages certainly do. This is because Section 45 of the Trademark Act of 1946, 15 U.S.C. 1127, states, under the definition of the term "use in commerce," that a mark shall be deemed to be in use in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services (emphasis added). In contrast, the same section states that a mark shall be deemed to be in use in commerce on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce (emphasis added). Thus, for goods, neither a white pages listing, nor a yellow pages advertisement, constitutes technical trademark use.
FN17. We note that registrant's address is listed in its registrations as 2025 W. River Rd., Minneapolis, MN. The search of company names in the American Business Directory for entities whose names contain the term BROADWAY and which offer restaurant services and/or related services or goods found a number of such entities located in Minneapolis. They include ORIGINAL BROADWAY STATION INC. (an eating place with pizza) and BROADWAY BAR (a drinking place, eating place and restaurant), both located at 2025 River Rd. (registrant's address), and BROADWAY PIZZA (an eating place with pizza, presumably another of registrant's establishments) on Kenzie Terrace. However, the search also found BROADWAY CHOW MEIN INC. (an eating place) on W. Broadway Avenue, MARV'S BROADWAY BAR & BOWL (a bowling center, drinking place, and bar) on N. 2nd St., BROADWAY FOOD & GAS (a grocery store) on W. Broadway Ave., and MARCHE'S BROADWAY SUPER VALU (a grocery store) on W. Broadway. Thus, in registrant's hometown, BROADWAY has geographic significance.
FN18. Of course, our decision in this ex parte case would not preclude us from reaching a different result, on a different record, in any opposition or cancellation proceeding which might be brought by registrant with respect to the subject matter of this application. See In re Dayco Products -Eaglemotive Inc., 9 USPQ2d 1910 (TTAB 1988), and Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105 (TTAB 1973), aff'd, 183 USPQ 427 (CCPA 1974).